4 Questions to Ask a Patent Attorney

4 Questions to Ask a Patent Attorney

by Joe Runge, Esq., June 2015

You lay out all your notes on the dining room table. Next to them you place all the patents printed out from your patent search. You decide you need a patent lawyer. After 5 minutes searching “patent lawyers” on Google, you are overwhelmed: how do you know which one to hire?

Like any other professional you need to talk with your lawyer before you decide to hire him or her. Here are four good questions to ask a patent attorney.

1. What Is Your Technical Background?

Not every invention requires an advanced scientific degree or years of specialized training. Even if your invention is technically simple it may be hard to find the right patent attorney to write your patent. You need to ask questions to see if the lawyer has personal experience with the kind of products you want to protect and an ability to help you describe the invention to protect its value. You want someone that understands how to patent an idea like yours and turn it into valuable intellectual property.

For example, you invent a new dog toy. There are many other patents that describe similar dog toys but your toy is shaped in a way that will tire dogs quickly when they shake it. You will want a patent lawyer with some understanding of dogs, how they play and why people want to buy toys for them. Ideally, you want a lawyer with experience writing patents for pet toys.

You need to know more than where a patent lawyer went to school and what they studied. When you talk to a lawyer, you get a sense of what they are interested in and what makes him or her curious. You can also ask about patents they’ve written in the past. Patent lawyers write a lot of patents and not all of them are in the field they have the most education in.

2. How Do You Work With Your Clients?

Writing a patent with a lawyer is a collaborative process and, like any collaborative process, requires communication. What is the lawyer’s patent process like? How often do they meet with their clients? Perhaps you want a lawyer that will take all your notes and draft a patent application for your review. Perhaps you are more comfortable with the lawyer reviewing your notes, coming up with a strategy for your approval before writing the bulk of the specifications.

Whatever the process is, you need to understand it. You need to be able to set clear expectations and see if it is how you want to work with the lawyer. The patent lawyer works for you. You are hiring them, however, to manage a complex project that may involve a lot of people. You need a lawyer that can manage writing the patent in addition to being a technical and legal expert. You want to find out early if you and the attorney share the same ideas and processes.

3. What Kind Of Team Do You Have?

Filing a patent is a complex process and your lawyer will lead a team of professionals. Its most likely that your lawyer will have junior patent attorneys or patent agents that work for them. Ask who he or she thinks will work on your patent and why they chose them. Ask to talk to them if you are uncomfortable and know how your lawyer will supervise their work.  

Most lawyers hire draftsmen to make patent drawings. Ask how long it will take to make the drawings and how you will work with their team to sketch and approve them. You also need to know the lawyer’s paraprofessional support staff. Who will actually file your patent application and who will keep track of the responses made by the U.S. Patent Office? If a patent lawyer tries to do it all themselves that is a troubling sign.

Do not overlook yourself. You are the expert on your invention and on your patent lawyer’s team. Do you want to draft some of it yourself? Do you have some drawings that you think are perfect? Know what part you want to play on the team and hire a lawyer with similar expectations.

4. Have You Worked As An Examiner At The United States Patent And Trademark Office (USPTO)?

Law firms prize patent attorneys that worked as examiners. They are expert negotiators that understand both sides of the table. If a lawyer has not worked as an examiner do not just pass them over. However, if you are trying to choose between two qualified patent lawyers, you may want to hire the one that was a USPTO examiner.

For example, once your dog toy patent is filed it will go to the office at the USPTO (called a Group Art Unit) that examines animal toy patents. If your lawyer worked in that office then they will have insight into how it is managed. He or she will write the patent in a way that anticipates the likely response.

A former examiner turned patent lawyer is not, however, someone that will use their relationships with the current examiners to give you an edge. He or she is simply someone with insight into what it is like to respond to a patent application and will write your patent accordingly.

Patents are expensive and important. One of the best way to make sure that your patent is well written and on budget is to hire the right lawyer. These four questions will help make sure your patent attorney has the right education, the right team, the right experience and is someone that you can work with.

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